USPTO invalidates Apple’s “rubber banding” patent

The USPTO has stated their intention to invalidate Apple’s bounce-scroll patent, the one referred to as “rubber banding,” U.S. Patent Number 7469381, one of the patents litigated in Apple’s $1B victory over Samsung. Samsung immediately reported the finding to judge Lucy Koh, and Florian Mueller blogs about what might happen next.

This development is not surprising, but it is illustrative of a systemic problem. If (according to USPTO’s own recent statistics) 92% of all the requests to USPTO to re-examine patent claims are granted and if 78% of the re-examinations find a problem with the original claims, then it is likely that some of Apple’s patent claims will be invalidated.

The present system begs at least two questions:

Why allow the expense of litigating patent claims to precede a USPTO ruling on validity? It seems counter-intuitive, absent the opportunity to gain an injunction, which judges seem very reluctant to do anyway. Would it not serve the public well to grant a judge the authority (and to make it customary) to request USPTO validity hearings on the patents in suit pre-trial?

Why are such statistics acceptable to USPTO? It is clear the agency expects that most patents granted will not be subject to the validity hearings. Otherwise, the process undergone in validity hearings would approximate the process undergone to grant a patent in the first place and staffing would have to increase to almost unmanageable levels.

The dirty little secret is that non-litigated patents exist, at least for now, under the same statistical umbrella: 92% of them exist with claims that may be invalidated if put to a hearing. What does this do to their valuation?